The Applicability of the Attorney-Client Privilege to Communications with Foreign Legal Professionals

Transcription

1 Fordham Law Review Volume 66 Issue 1 Article The Applicability of the Attorney-Client Privilege to Communications with Foreign Legal Professionals Daiske Yoshida Recommended Citation Daiske Yoshida, The Applicability of the Attorney-Client Privilege to Communications with Foreign Legal Professionals, 66 Fordham L. Rev. 209 (1997). Available at: This Article is brought to you for free and open access by FLASH: The Fordham Law Archive of Scholarship and History. It has been accepted for inclusion in Fordham Law Review by an authorized administrator of FLASH: The Fordham Law Archive of Scholarship and History. For more information, please contact tmelnick@law.fordham.edu.

2 THE APPLICABILITY OF THE ATEORNEY-CLIENT PRIVILEGE TO COMMUNICATIONS WITH FOREIGN LEGAL PROFESSIONALS by Daiske Yoshida* INTRODUCTION Over the past decade, courts have seen a significant increase in lawsuits involving foreign and multinational corporations, 1 particularly in intellectual property cases. 2 Often in such lawsuits, juries award multimillion-dollar damages 3 and plaintiffs seek to treble them for willful infringement. 4 With such large sums at stake, discovery plays a central role in these disputes. 5 U.S. federal courts allow few barriers against total disclosure, 6 the attorney-client privilege being the oldest. 7 In contrast, discovery in * The author is a native speaker of Japanese and has been employed as a professional legal translator and interpreter for over five years. The editors of the Fordham Law Review rely on his expertise regarding cites to untranslated Japanese-language publications. 1. See Lucinda A. Low, Virtually All Areas of Law Profession Face Globalization, Nat'l L., Aug. 5, 1996, at C9; Hans Smit, The Explosion in International Litigation, Metropolitan Corp. Couns., Oct. 1996, at See Lawrence B. Friedman & Ayala Deutsch, More Foreign Firms File IP Claims in U.S. Courts, Nat'l L., Oct. 28,1996, at C34 (describing increased U.S. patent ownership by foreign, particularly Japanese, companies, and a subsequent increase in the number of lawsuits with foreign plaintiffs). 3. A study of patent cases from found that, of 177 cases awarding damages, 61 resulted in damages between $1 million and $10 million and 25 resulted in damages over $10 million. See Julie L. Davis & Allison C. Moran, An Historical Look at Patent Infringement Damage Awards, in Intellectual Property Infringement Damages 3, 6 (Supp. 1995); see e.g., Minnesota?Mining & Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1563 (Fed. Cir. 1992) (awarding damages of over $106 million); Polaroid Corp. v. Eastman Kodak Co., 16 U.S.P.Q.2d (BNA) 1481,1541 (D. Mass. 1990) (awarding $909 million); Smith Int'l Inc. v. Hughes Tool Co., 229 U.S.P.Q. (BNA) 81, 103 (C.D. Cal. 1986) (over $200 million). Recently, some extremely high jury awards have been vacated by the trial judge or overturned on appeal before the Federal Circuit. See, e.g., Alpex Computer Corp. v. Nintendo Co., 102 F.3d 1214,1215 (Fed. Cir. 1996) (reversing a $253 million jury verdict); Litton Sys. Inc. v. Honeywell Inc., No , 1995 U.S. Dist. LEXIS 729, at *177 (C.D. Cal. Jan. 4, 1995) (vacating a $1.2 billion jury award). 4. If a plaintiff can prove that a defendant willflly infringed the plaintiff's patent, the plaintiff is entitled to seek an enhancement to the damages award of up to three times the amount of actual damages. Herbert F. Schwartz, Patent Law and Practice (2d ed. 1995). 5. One commentator suggests that the broad scope of discovery is the primary reason for the high costs associated with patent litigation in the United States. See Alfred Ewert, Is IP Litigation in the U.S. Really Worth It?, Managing Intell. Prop., June 1995, at See id ("[In the United States] almost unlimited discovery is permitted."). 7. See Upjohn Co. v. United States, 449 U.S. 383, 389 (1981). 209

3 210 FORDHAM LAW REVIEW [Vol. 66 foreign systems is much more limited." In those systems, communications between a client and a lawyer, or other legal professionals, are never subject to disclosure.' One reason is that wide-open discovery in the American style simply does not exist in other countries-for example, Japan does not even have a term in its lexicon equivalent to discovery." Also, and more importantly, those systems have well-established rules of professional privilege." Our broad discovery rules disadvantage foreign parties facing litigation in the United States by forcing them to reveal information even when such disclosure could incur criminal penalties in their own legal regimes.'" While American courts have generally ignored such concerns and favored full discovery over any foreign secrecy interest, Ewert, supra note 5, at 27 ("In civil law countries there is little if any discovery."); see also Soci6td Nationale Industrielle Aerospatiale v. United States Dist. Court, 482 U.S. 522, 563 n.21 (1987) (Blackmun, J., concurring in part and dissenting in part) (noting that at the negotiations leading to the Hague Evidence Convention, "civil-law countries revealed a 'gross misunderstanding' of the meaning of 'pre-trial discovery,' thinking that it is something used before the institution of a suit to search for evidence that would lead to litigation."); Ayako Ikeda, Practical Aspects of Patent Litigation in Japan, Managing Intell. Prop., Feb. 1995, at 38, 40 ("[T]he Japanese system does not allow extensive pre-trial discovery. In principle each party to the litigation has to gather evidence itself."). 9. See Virginia J. Harnisch, Confidential Communications Between Clients and Patent Agents: Are They Protected Under the Attorney-Client Privilege?. 16 Hastings Comm. & Ent. LJ. 433, 446 (1994). 10. Although sometimes the term shoko kaiji [evidence disclosure] is used, the translation has been criticized as misleadingly narrow in the context of American civil litigation. Eibeiho jiten [Dictionary of Anglo-American Law] 258 (1991 ed.); see also Ikeda, supra note 8, at 40 (discussing the lack of discovery tools in the Japanese legal system). 11. See Alison M. Hill, Note, A Problem of Privilege: In-House Counsel and the Attorney-Client Privilege in the United States and the European Community, 27 Case W. Res. J. Int'l L. 145, (1995); see also David W. Louisell, Confidentiality, Conformity and Confusion: Privileges in Federal Court Today, 31 Tul. L. Rev. 101, (1956) (discussing lawyer-client privilege around the world as based on traditional notions of duty and loyalty). The professional privilege rules of foreign countries are discussed infra Part II. 12. See Jack B. Weinstein, Recognition in the United States of the Privileges of Another Jurisdiction, 56 Colum. L. Rev. 535, 537 (1956). 13. See, e.g., Socidt6 Nationale Industrielle Aerospatiale v. United States Dist. Court, 482 U.S. 522, 542 (1987) ("It is well known that the scope of American discovery is often significantly broader than is permitted in other jurisdictions, and we are satisfied that foreign tribunals will recognize that the final decision on the evidence to be used in litigation conducted in American courts must be made by those courts."); Soci6t6 Internationale pour Paticipations Industrielles et Commerciales v. McGranery, 111 F. Supp. 435, (D.D.C. 1953), affd sub nom. Soci6t6 Internationale pour Paticipations Industrielles et Commerciales v. Brownell, 225 F.2d 532 (D.C. Cir. 1955) ("[F]oreign law cannot be permitted to obstruct the investigation and discovery of facts in a case, under rules established as conducive to the proper and orderly administration of justice in the court of the United States."); In re Honda Am. Motor Co. Dealership Relations Litig., 168 F.R.D. 535, 539 (D. Md. 1996) ("As to the litigants themselves, it would be patently unfair to constrain plaintiffs' ability to discover facts necessary to make their case... While the scope of plaintiffs' discovery would necessarily be limited under Japanese law, [the defendant] would have free reign to

4 1997] ATTORNEY-CLIENT PRIVILEGE some courts have gone even further. These courts have pursued an approach that, in effect, denies foreigners protection over their confidential legal communications. 4 An American party that obtained legal advice abroad could find such communications subject to discovery if they were with non-lawyers, even if no other source of advice existed in the foreign system. This problem affects both American and foreign parties, defendants and plaintiffs alike. The advisory role of legal professionals who are not "lawyers" (insofar as they are not admitted to a bar of a court) in foreign systems is much more significant than in the United States. Such professionalsspecializing in fields such as patent, tax, and corporate in-house counseling-may, and are expected to, render legal advice to clients and employers 1 5 In many countries, they are substantial, if not primary, sources of legal advice.' 6 Based on their role in society and their relationships to their clients, many types of foreign non-lawyer legal professionals act as attorneys for all purposes relevant to the policies underlying the attorney-client privilege.' 7 By not allowing attorney-client privilege to cover these communications, courts disregard the realities of legal practice beyond American borders. Even though we live in "a worldwide technological and economic community," 18 it is a community hindered by perilously inconsistent rules. By providing a back door through which a clever litigant may obtain the otherwise undiscoverable confidences of a client, such inconsistencies undermine not only the confidence of foreign companies in the U.S. legal system but also the very purpose of the attorney-client privilege. As the Supreme Court stated: [I]f the purpose of the attorney-client privilege is to be served, the attorney and client must be able to predict with some degree of certainty whether particular discussions will be protected. An uncertain privilege, or one which purports to be certain but results in discover all relevant facts pursuant to the Federal Rules of Civil Procedure."); see also Weinstein, supra note 12, at 539 (asserting that American courts should compel disclosure where testimony is vital, even if it would expose a party to liability abroad). But see Aerospatiale, 482 U.S. at (Blackmun, J., concurring in part and dissenting in part) (stating, for a four-judge minority, that "courts are generally ill equipped to assume the role of balancing the interests of foreign nations with that of our own," and would tend toward a pro-fornm bias). 14. See, e.g., Status Tune Corp. v. Sharp Elecs. Corp., 95 F.R.D. 27, (S.D.N.Y. 1982). 15. See G. Gregory Letterman, Letterman's Guide to International Business 1.57, at 1-87 (1996); John A. Nilsson, Dealing Effectively with Local Counsel Abroad 1.03, at 1-3 (1988). 16. I; see also Harnisch, supra note 9, at 445 (stating that in many foreign countries, patent agents are the "primary providers of legal services and advice for those pursuing patent rights in the foreign patent office."). 17. See infra Part II. 18. Cuno, Inc. v. Pall Corp., 729 F. Supp. 234, 239 (E.D.N.Y. 1989) (proposing worldwide harmonization in patent litigation judgments).

5 FORDHAM LAW REVIEW [Vol. 66 widely varying applications by the courts, is little better than no privilege at all.' 9 This Note focuses on the application of the attorney-client privilege to foreign non-lawyer legal professionals primarily in relation to patent agents and patent attorneys. The analysis, however, may be applied by analogy to other foreign legal professionals, such as in-house counsel and tax advisers. Part I reviews the attorney-client privilege in the United States, and discusses its expansion to patent agents registered in the United States Patent and Trademark Office ("USPTO"). Part II describes the role of patent advisers in foreign systems.. Part III examines the case law dealing with the applicability of the attorneyclient privilege to foreign patent advisers, and the divergent theoretical rationales underlying those opinions. Part IV argues that none of the existing approaches is satisfactory and proposes the use of a tempered functional approach, which calls for a standardized analysis of the role played by the foreign legal professional in advising clients. This Note concludes that American courts should recognize a privilege protecting substantive legal advice irrespective of where it is given. I. AN OVERVIEW OF ATORNEY-CLIENT PRIVILEGE IN THE UNITED STATES The attorney-client privilege is the oldest privilege restricting disclosure in Anglo-American law, and is firmly rooted in its jurisprudence. 20 It is also the only communications privilege recognized in every state. 2 ' Dean Wigmore formulated the most traditional statement of attorney-client privilege as follows: (1) Where legal advice of any kind is sought (2) from a professional legal adviser in his capacity as such, (3) the communications relating to that purpose, (4) made in confidence (5) by the client, (6) are at his instance permanently protected (7) from disclosure by himself or by the legal adviser, (8) except the protection be waived. 22 This definition has been the standard rule of privilege in the United States Upjohn Co. v. United States, 449 U.S. 383, 393 (1981). 20. Id at 389; 3 Weinstein's Federal Evidence [1], at (McLaughlin ed. 1997) [hereinafter Weinstein, Federal Evidence]. 21. Ford Motor Co. v. Leggat, 904 S.W.2d 643, 647 (Tex. 1995) Wigmore on Evidence 2292 (McNaughton rev. 1961). 23. See Gregg F. LoCascio, Reassessing Attorney-Client Privileged Legal Advice in Patent Litigation, 69 Notre Dame L. Rev. 1203, 1207 (1994). The Wigmore standard is followed in the Second, Sixth, Seventh, Ninth and Tenth Circuits. Id. at 1207 n.23. In United States v. United Shoe Mach. Corp., 89 F. Supp. 357 (D. Mass. 1950), Judge Wyzanski of the District Court of Massachusetts offered a restatement of the Wigmore rule that is followed by the First, Third, Fourth, Fifth, Eighth, Eleventh, and District of Columbia Circuits. LoCascio, supra, at 1209 n.30. The court defined the attorney-client privilege as follows:

6 19971 ATTORNEY-CLIENT PRIVILEGE 213 While each U.S. state has its own privilege rules, 24 federal courts are governed by Rule 501 of the Federal Rules of Evidence. Rule 501, designed by Congress to preserve the existing state of privileges as opposed to establishing specific statutory privileges, requires courts to apply the "federal common law" of privilege. 6 As interpreted by the Supreme Court in Upjohn Co. v. United States, 27 Rule 501 allows courts to decide privilege issues on a case-by-case basis. 8 While this reading may be consistent with the legislative history of the rule, 2 it has resulted in inconsistency and confusion at the margins of the privilege. 3 " For example, although the Supreme Court held that American (1) the asserted holder of the privilege is or sought to become a client; (2) the person to whom the communication was made (a) is a member of the bar of a court, or his subordinate and (b) in connection with this communication is acting as a lawyer, (3) the communication relates to a fact of which the attorney was informed (a) by his client (b) without the presence of strangers (c) for the purpose of securing primarily either (i) an opinion of law or (ii) legal services or (iii) assistance in some legal proceeding, and not (d) for the purpose of committing a crime or tort; and (4) the privilege has been (a) claimed and (b) not waived by the client. 89 F. Supp. at The Wigmore and United Shoe formulations are different in several respects, particularly in the description of the legal adviser. Whereas United Shoe requires that the adviser be a "member of the bar of a court, or his subordinate," id. at 358, Wigmore simply says "a professional legal adviser in his capacity as such." Wigmore, supra note 22, This difference significantly impacts the treatment of non-lawyer legal professionals for purposes of privilege. For a detailed comparison of the Wigmore and United Shoe standards of privilege, see LoCascio, supra note 23, at The United Shoe formulation has been criticized as being inconsistent with the purpose of the privilege. See id. at For a detailed listing of state privilege rules, see Wigmore, supra note 22, 2292, at 555 n Fed. R. Evid The rule reads: Except as otherwise required by the constitution of the United States or provided by Act of Congress or in rules prescribed by the Supreme Court pursuant to statutory authority, the privilege of a witness, person, government, State, or political subdivison thereof shall be governed by the principles of the common law as they may be interpreted by the courts of the United States in the light of reason and experience. However, in civil actions and proceedings with respect to an element of a claim or defense as to which State law supplies the rule of decision, the privilege of a witness, person, government, State, or political subdivision thereof shall be determined in accordance with State law. Id. 26. See generally Daniel J. Capra, The Federal Law of Privileges, 16 Litig. 32 (1989) (discussing the impact of the rule on litigation) U.S. 383 (1981). 28. Id at See id. 30. In Upjohn, the Supreme Court noted that a "case-by-case" approach may "undermine desirable certainty in the boundaries of the attorney-client privilege," but declined to establish generally fixed rules in this area. Id. This approach has been criticized as causing uncertainty. See id. at (Burger, Ci., concurring in part and concurring in the judgment); 1 McCormick on Evidence 87.1, at 320 (4th ed. 1992); Stanley A. Freedman, Corporate Attorney-Client Privilege since Upjohn, at Home and Abroad, 9 U. Dayton L. Rev. 425, (1984).

7 FORDHAM LAW REVIEW [Vol. 66 patent agents are engaged in the authorized practice of law, 31 district courts remain split over whether their communications are entitled to privilege. 3 Also, some states do not recognize a general privilege covering legal communications between in-house counsel and corporate employees, 33 even though such a privilege was held to exist by the Supreme Court. 3 4 This creates practical difficulties for attorneys and other legal advisers and, in turn, for their clients and potential clients. In cases involving foreign legal professionals, this confusion is further complicated as courts must venture into the unsettled area of conflict of laws. 35 A. Recognition of the Attorney-Client Privilege for Non-Lawyers The rationale for attorney-client privilege is that it encourages people to provide truthful and full information, enabling their legal adviser to provide appropriate advice. 36 At the same time, as Wigmore noted, the attorney-client privilege stands in derogation of the public's "right to every man's evidence, ' 37 and is "an obstacle to the investigation of the truth. '38 Thus, "[i]t ought to be strictly confined within the narrowest possible limits consistent with the logic of its principle Sperry v. Florida, 373 U.S. 379, 386 (1963). 32. See Harnisch, supra note 9, at 439 ("The status of patent agents and the attorney-client privilege has yet to be definitely resolved thirty years after Sperry."); Lo- Cascio, supra note 23, at 1209; John Ogilvie, Law++: Understanding the Differences Between Attorneys, Blue Chips Magazine (July 1996) <http// archive/ju196.htm> ("There is... a split of opinion in the courts regarding 'privilege'..."); compare In re Ampicillin Antitrust Litig., 81 F.R.D. 377, (D.D.C. 1978) (recognizing the attorney-client privilege as protecting communications with patent agents who are registered to practice before the United States Patent and Trademark Office) with Joh. A. Benckiser G.m.b.H., Chemische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999, 1001 (D.N.J. 1966) (stating that the attorney-client privilege does not extend to patent agents who are not members of a bar). 33. See, e.g., Consolidation Coal Co. v. Bucyrus-Erie Co., 432 N.E.2d 250,257 (Ill. 1982) (reaffirming the "control group" test). 34. Upjohn, 449 U.S. at See infra Part IV. 36. Upjohn, 449 U.S. at 389; Fisher v. United States, 425 U.S. 391, 403 (1976). Other justifications exist. For example, the traditional basis of the privilege in Anglo- American law was a lawyer's sense of honor. See In re Grand Jury Proceedings, 87 F.3d 377, 381 n.5 (9th Cir. 1996); In re Colton, 201 F. Supp. 13, 15 (S.D.N.Y. 1961), affd 306 F.2d 633 (2d Cir. 1962); Weinstein, supra note 12, at 536 n.7. The honor rationale, however, diminished in England during the 18th century. See LoCascio, supra note 23, at Privacy is another reason for the privilege suggested by commentators. See Thomas G. Krattenmaker, Testimonial Privileges in Federal Courts: An Alternative to the Proposed Federal Rules of Evidence, 62 Geo. L.J. 61, (1973); Louisell, supra note 11, at ; Michael Martin, Evidence: Modern Privilege Doctrine and Selective Waiver, N.Y. L.J., Apr. 10, 1992, at 3. Like honor, however, privacy also has been rejected in this country as a justification for the privilege. See Steven Bradford, Conflict of Laws and the Attorney-Client Privilege: A Territorial Solution, 52 U. Pitt. L. Rev. 909, 915 (1991). 37. Wigmore, supra note 22, 2192 at Id 2291, at Id

8 1997] ATTORNEY-CLIENT PRIVILEGE 215 Courts have frequently relied on this language to deny any perceived expansion of the coverage of attorney-client privilege beyond its strictest confines, i.e. certain types of communications between a member of an American bar and a client. 4 These courts make membership in an American bar the sine qua non on whether communications are privileged. 41 The notion that the umbrella of attorney-client privilege may extend beyond attorneys admitted in a bar of the court, however, is far from heretical, or even novel. In terms of policy interests, some authorities place the protection of the client above the principle of open disclosure, and do not specifically require bar membership. For example, in proposing privilege rules for the Federal Rules of Evidence, the Supreme Court Advisory Committee broadly defined a "lavyer" for attorney-client privilege as "a person authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation." '4 Wigmore himself proposed that a "professional privilege" 40. See, e.g., United States v. United Shoe Mach. Corp., 89 F. Supp. 357, 361 (D. Mass. 1950) (holding that the relationship between an in-house patent attorney and his employer-corporation was "not that of attorney and client" and denying privilege). But see Upjohn, 449 U.S. at (holding that the relationship between an in-house attorney and his employer corporation may be privileged). 41. See, e.g., Novamont N. Am., Inc. v. Warner-Lambert Co., No. 91 Civ. 6482, 1992 U.S. Dist. LEXIS 6622, at *6 (S.D.N.Y. May 6,1992); Status Time Corp. v. Sharp Elecs. Corp., 95 F.R.D. 27,32-33 (S.D.N.Y. 1982); Rayette-Faberge, Inc. v. John Oster Mfg. Co., 47 F.R.D. 524, 526 (E.D. Wis. 1969); Joh. A. Benckiser G.mb.H., Chemische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999, 1001 (D.N.J. 1966). 42. Fed. R. Evid. proposed rule 503(a)(2), reprinted in Federal Rules of Evidence with Advisory Committee Notes and Legislative History 306 (Christopher B. Mueller & Laird C. Kirkpatrick eds., 1996) [hereinafter Mueller & Kirkpatrick] (emphasis added). Proposed rule 503 provides, in pertinent part: (a) Definitions. As used in this rule: (1) A "client" is a person, public officer, or corporation, association, or other organization or entity, either public or private, who is rendered professional legal services by a lawyer, or who consults a lawyer with a view to obtaining professional legal services from him. (2) A "lawyer" is a person authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation. (3) A "representative of the lawyer" is one employed to assist the lawyer in the rendition of professional legal services. (4) A communication is "confidential" if not intended to be disclosed to third persons other than those to whom disclosure is in furtherance of the rendition of professional legal services to the client or those reasonably necessary for the transmission of the communication. (b) General rule of privilege. A client has a privilege to refuse to disclose and to prevent any other person from disclosing confidential communications made for the purpose of facilitating the rendition of professional legal services to the client, (1) between himself or his representative and his lawyer or his lawyer's representative, or (2) between his lawyer and the lawyer's representative, or (3) by him or his lawyer to a lawyer representing another in a matter of common interest, or (4) between representatives of the client or between the client and a representative of the client, or (5) between lawyers representing the client. Id. at

9 FORDHAM LAW REVIEW [Vol. 66 be recognized for non-lawyer administrative practitioners on the principle that people who seek their advice would be in the position of clients. 4 3 Wigmore, while noting that courts tend to deny such a privilege, nevertheless recommended the following approach: A correct test for recognizing professional privilege would seem to be this: If the administrative department (bureau, board, commission, etc.) requires an oath of office and prior proof of professional qualifications and maintains a list of registered persons so qualified, or if in any other way its regulations treat the special practitioners as a licensed body having the responsibility of attorneys and subject to professional discipline, then the parties so represented are in the status of clients, and the clients are therefore entitled to the appropriate consequences, including the confidentiality of communications." Despite their general reluctance to recognize such a broad privilege, courts applying the federal common law of privilege have held that the attorney-client privilege is applicable to non-lawyers in certain circumstances. 45 Courts generally agree that a non-lawyer acting as an agent of an attorney may invoke the attorney-client privilege, 46 and Proposed rule 503, along with other privilege rules proposed by the Supreme Court, was ultimately rejected by Congress. The main reason for the rejection was the unwillingness of Congress to impinge on State privileges, or to be seen in any way as "freezing" the law of privileges. See Mueller & Kirkpatrick, supra, at 112, 115. Proposed rule 503, however, has become a part of at least ten state statutes as Rule 502 of the Uniform Rules of Evidence. See Helena M. Tavares, The United States Perspective of Travelling with the Attorney-Client Privilege: Checked or Carry-on Baggage?, 7 Int'l L. Practicum 9, 10 (1994). Scholars have also endorsed the proposed standard as the proper definition of attorney-client privilege. See id.; McCormick, supra note 30, at 317 & 317 n.18; Weinstein, Federal Evidence, supra note 20, , at 503-8; see also In re Grand Jury Investigation, 918 F.2d 374,380 (3d Cir. 1990) ("[T]he proposed rules provide a useful reference point and offer guidance in defining the existence and scope of evidentiary privileges in the federal courts."). As noted in the comments to proposed rule 503, "[t]here is no requirement that the licensing state or nation recognize the attorney-client privilege, thus avoiding excursions into conflict of laws questions." Mueller & Kirkpatrick, supra, at 309. Thus, the rule should protect communications with a legal practitioner who is licensed in a foreign country that does not recognize an attorney-client privilege. 43. Vrigmore, supra note 22, 2300a, at 582 (stating that "[t]here is every reason... for recognizing a privilege" for communications between clients and non-lawyer representatives, such as administrative practitioners). By implication, the category of "non-lawyer representatives" includes patent agents because almost all of the cases cited in this section relate to patent agents. See id., 2300a, at 582 n Id. at In addition to the federal cases discussed infra, state courts have extended the attorney-client privilege to lay (i.e. non-lawyer) representatives. See, e.g., Welfare Rights Org. v. Crisan, 661 P.2d 1073, 1077 (Cal. 1983) (in bank) (recognizing a privilege for communications with authorized representatives of welfare claimants); see also Julie B. Nobel, Note, Ensuring Meaningful Jailhouse Legal Assistance: The Need for a Jailhouse Lawyer-Inmate Privilege, 18 Cardozo L. Rev (1997) (proposing the recognition of a privilege for communications with lay "jailhouse lawyers"). 46. Harnisch, supra note 9, at 439 n.26. In United States v. Kovel, 296 F.2d 918 (2d Cir. 1961), Judge Friendly held that an accountant, when acting as an "interpreter" for

10 1997] ATTORNEY-CLIENT PRIVILEGE that communications between lawyers and non-lawyers, including patent agents, accountants, and foreign legal professionals, may be protected by the attorney work-product doctrine once litigation is contemplated. 4 7 Beyond agency or attorney-work product doctrines, however, federal courts have extended attorney-client privilege to only one profession other than lawyers-patent agents. 48 B. Application of the Attorney-Client Privilege to American Patent Agents In the United States, patent law practitioners may be divided into two broad categories: patent attorneys and patent agents. Patent attorneys are lawyers who are licensed to practice general law, but specialize in patent law. 49 Patent agents, on the other hand, are not members of a bar, and are restricted to prosecuting patent applications and otherwise representing inventors before the USPTO. 50 the lawyer, may be protected by the attorney-client privilege. Id. at ; see also John J. Tigue, Jr. et al., The Kovel Accountant Privilege, N.Y. LJ., May 19, 1994, at 3. The Kovel privilege is the law in the Second Circuit and is even recognized in the Internal Revenue Manual, but other circuit courts have not applied the privilege under similar circumstances. Id. Courts have used the Kovel privilege to protect communications with various non-lawyers other than accountants. See, e.g., United States v. Alvarez, 519 F.2d 1036, (3d Cir. 1975) (psychiatrists); In re Witness-Attorney Before Grand Jury No. 83-1,613 F. Supp. 394, (S.D. Fla. 1984) (bail bondsmen); People v. George, 428 N.Y.S.2d 825, 827. (Sup. Ct. Bronx Co. 1980) (polygraphers). The privilege also protects patent agents acting under the authority and control of an attorney. See, e.g., Golden Trade, S.r.L v. Lee Apparel Co., 143 F.R.D. 514, (S.D.N.Y. 1992); Cuno, Inc. v. Pall Corp., 121 F.R.D. 198, 204 (E.D.N.Y. 1988); Hercules Inc. v. Exxon Corp., 434 F. Supp. 136, 146 (D. Del. 1977); W.R. Grace & Co. v. Pullman Inc., 446 F. Supp. 771, 776 (W.D. OkIa. 1976). Courts that recognize a privilege for foreign patent agents under an agency rationale are careful to distinguish between communications where the attorney is merely acting as a "conduit" for information to be submitted to the foreign patent officewhich would not be privileged-and when the patent agent is engaged in the "lawyering process"-in which case the position of the foreign patent agent may be the same as that of co-counsel, and his communication privileged. See, e.g., Baxter Travenol Labs., Inc. v. Abbot Labs., 1987 U.S. Dist. LEXIS 10300, at "21 (N.D. M11. June 17, 1987); Mendenhall v. Barber-Greene Co., 531 F. Supp. 951, 954 (N.D. MI. 1982); Detection Sys. Inc. v. Pittway Corp., 96 F.R.D. 152, 156 (W.D.N.Y. 1982). 47. Duplan Corp. v. Deering Milliken Inc., 397 F. Supp. 1146, 1171 (D.S.C. 1974). 48. Evidence rules relating to patent litigation pose a unique question, in that a special court in Washington D.C.-the Court of Appeals for the Federal Circuit-has exclusive appellate jurisdiction over patent cases. Schwartz, supra note 4, at 26. Under Panduit Corp. v. All States Plastic Mfg. Co., 744 F.2d 1564, (Fed. Cir. 1984), the Federal Circuit generally defers to the evidence rules of the various circuits. It is axiomatic, however, that the other circuit courts do not have evidence rules specific to patent litigation. Where the Federal Circuit has not spoken on evidentiary questions unique to patent lawsuits, such as the issues of attorney-client privilege discussed in this Note, district courts are left with no controlling authority. 49. See William James Kopacz, Note: The European Patent Attorney Qualifying Examination: An American Perspective, 69 J. Pat. & Trademark Off. Soc'y 47, 51 (1987). 50. Harnisch, supra note 9, at 434. There is some divergence of opinion as to whether or not U.S. patent agents practice law, and whether they are therefore enti-

11 218 FORDHAM LAW REVIEW [Vol. 66 In order to practice before the USPTO, both patent agents and patent attorneys must first take a patent bar examination administered by the USPTO. 51 To take the exam, usually given only once per year, an applicant must have a bachelor's degree in a recognized technical subject or equivalent scientific training. 52 The test is given in two parts: a multiple-choice test of USPTO rules and a long-answer test. 5 3 The multiple-choice questions require such skills as being able to calculate the last possible date for responding to an action by the patent examiner. 4 The long-answer section requires the test taker to draft claims and amendments based on a long fact pattern, but does not require any technical or scientific knowledge. The entire exam has a pass rate ranging from 28% to 40%.56 Once admitted, the USPTO regulations require patent agents to follow ethical rules modeled on the American Bar Association's Model Code of Professional Responsibility, 5 7 including Canon 4 on the attorney-client privilege. 5 8 Thus, patent agents are bound by the same ethical rules as lawyers. 5 9 Although the traditional view was that tied to privilege. See Sperry v. Florida, 373 U.S. 379, 383 (1963) (holding that patent agents practice law); Harnisch, supra note 9, at 444 (advocating a consistent recognition by courts that U.S. and foreign patent agents engage in the authorized practice of law); James J. Merek & David A. Guth, The Attorney-Client Privilege and U.S. Patent Agents: A Workable Rule for Protecting Communications, 76 J. Pat. & Trademark Off. Soc'y 591, 592 (1994) (asserting that "[t]here can be no question that patent agents.. engage in the practice of law"). Contra Status Time Corp. v. Sharp Elecs. Corp., 95 F.R.D. 27, 31 (S.D.N.Y. 1982) (recognizing the impact of Sperry, but reading it narrowly as expanding privilege to patent attorneys who prosecute patent applications, not patent agents); Joh. A. Benckiser G.m.b.H., Chenische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999, 1001 (D.N.J. 1966) (holding that the attorneyclient privilege may not be extended to "administrative practitioners") C.F.R. 10.7(b) (1996). The requirement is waived for an individual who has been a patent examiner for four years. Id. 52. Career Opportunities in Intellectual Property Law (visited June 1, 1997) <http'// Id. 54. Id 55. Id. 56. Id. 57. Compare 37 C.F.R (1996), with Model Code of Professional Responsibility (1981) C.F.R (1996). Under the PTO Code of Professional Responsibility, a lawyer is prohibited from knowingly revealing a confidence or secret of his client. 37 C.F.R (b) (1996). The code defines "confidence" as information protected by the attorney client privilege under applicable law, and "secret" as "other information gained in the professional relationship that the client has requested be held inviolate or the disclosure of which would be embarrassing or would be likely to be detrimental to the client." 37 C.F.R (a) (1996). The ABA's newer ethical rules, the Model Rules of Professional Conduct (1983) [hereinafter Model Rules], no longer make this distinction and more generally prohibit lawyers from revealing information "relating to representation of a client." Model Rules, Rule See In re Ampicillin Antitrust Litig., 81 F.R.D. 377, 393 (D.D.C. 1978); Vernitron Med. Prods., Inc. v. Baxter Labs., Inc., 186 U.S.P.Q. (BNA) 324, 325 (D.N.J. 1975).

12 1997] ATTORNEY-CLIENT PRIVILEGE communications with patent agents were not protected by the attorney-client privilege, 60 more recent decisions, following the Supreme Court's decision in Sperry v. Florida, 61 have extended the privilege to American patent agents.' In Sperry, the Court stated that while patent agents are not licensed to the general practice of law, they are engaged in the practice of law when prosecuting patent applications.' Discussing the authorized activities of patent agents, the Court noted: Such conduct inevitably requires the practitioner to consider and advise his clients as to the patentability of their inventions under the statutory criteria... as well as to consider the advisability of relying upon alternative forms of protection which may be available under state law. It also involves his participation in the drafting of the specification and claims of the patent application... which this Court long ago noted "constitute[s] one of the most difficult legal instruments to draw with accuracy." 64 While the decision did not deal directly with attorney-client privilege, some courts concluded that Sperry overturned the earlier rule regarding the applicability of the privilege to patent agents6 and extended its protection accordingly.' This view has not been embraced, however, in all post-sperry decisions, 67 and sometimes has been characterized as the minority position. 6 8 Thus, more than thirty years after Sperry, the situation has yet to be settled definitively. 69 This uncer- 60. See Zenith Radio Corp. v. Radio Corp. of Am., 121 F. Supp. 792, (D. DeL 1954) U.S. 379 (1963). 62. See cases cited infra note I, at 383, Id at 383 (quoting Topliff v. Topliff, 145 U.S. 156, 171 (1892)). 65. See eg., Hercules Inc. v. Exxon Corp., 434 F. Supp. 136, 147 (D. Del. 1977) (stating that since Sperry, "[t]he holding of early cases such as Zenith Radio Corp... is consequently of little weight"); Garrison v. General Motors Corp., 213 F. Supp. 515, 519 (S.D. Cal. 1963) (stating that the Sperry case is "poles apart from the Zenith case"). 66. See, e.g., Stryker Corp. v. Intermedics Orthopedics, Inc., 145 F.R.D. 298, 304 (E.D.N.Y. 1992); Dow Chem. Co. v. Atlantic Richfield Co., 227 U.S.P.Q. (BNA) 129, 134 (E.D. Mich. 1985); In re Ampicillin Antitrust Litig., 81 F.R.D. 377, 393 (D.D.C 1978); Vernitron Med. Prods., Inc. v. Baxter Labs., Inc., 186 U.S.P.Q. (BNA) 324,325 (D.NJ. 1975). 67. See, eg., Status Tume Corp. v. Sharp Elecs. Corp., 95 F.R.D. 27, 31 (S.D.N.Y. 1982); Joh. A. Benckiser G.m.b.H., Chemische Fabrik v. Hygrade Food Prods. Corp., 253 F. Supp. 999, (D.NJ. 1966). It should be noted that the precedential value of Benckiser is suspect, given the same court's contrary opinion m Vernitron nearly ten years later. Benckiser, 253 F. Supp. at 1002, Vernitron, 186 U.S.P.Q. (BNA) at See Welfare Rights Org. v. Crisan, 661 P.2d 1073, 1079 (Cal. 1983) (in bank) (Richardson, J., dissenting). 69. See Harnisch, supra note 9, at 439 ("The status of patent agents and the attorney-client privilege has yet to be definitely resolved thirty years after Sperry."). But see Weinstein, Federal Evidence, supra note 20, [3] at (asserting that "[c]ommunications to a non-lawyer administrative practitioner or patent agent... [are] not in themselves privileged" under proposed federal evidence rule 503(a)(2)).

13 FORDHAM LAW REVIEW [Vol. 66 tainty disadvantages both domestic patent law advisers and their prospective clients because they are unsure whether their communications are protected. 70 The applicability of attorney-client privilege to patent agents is further complicated when the question involves foreign non-lawyer advisers specializing in the patent laws of their respective countries. II. THE ROLE OF LEGAL PROFESSIONALS IN FOREIGN SYSTEMS Perhaps inevitably, courts faced with determining privilege issues relating to foreign legal professionals are guided by assumptions based on American legal practice. 71 But the status and role of lawyers in foreign systems are significantly more limited than in the United States, and non-lawyers thus perform many functions usually performed in the United States by lawyers. The distinction is particularly acute in the area of patent law. In the American legal system, parties faced with patent or other intellectual property issues may seek advice from any number of boutique law firms or general practice firms with intellectual property experience. 72 As this section discusses, foreign legal systems, unlike the American system, do not have "patent bars" consisting of technically knowledgeable lawyers. 73 Instead, technically proficient patent law professionals are authorized to practice patent law and provide legal advice on such substantive issues as infringement and validity even though they are not lawyers. A. Japan The patent representation system in Japan offers the most striking contrast to the system in the United States. Unlike American patent This assertion is questionable, both in terms of support and reasoning. The support consists of cases denying privilege to foreign, rather than domestic, patent agents. Id. at n.14. As discussed infra Part III, such cases involve considerations different from purely domestic cases. Moreover, proposed rule 503(a)(2) specifically does not require the formalities of membership in a bar, and instead requires only that the legal adviser be "authorized, or reasonably believed by the client to be authorized, to practice law in any state or nation." Fed. R. Evid. proposed rule 503(a)(2), reprinted in Mueller & Kirkpatrick, supra note 42, at 306. As the Supreme Court recognized in Sperry, patent agents are authorized to practice law. 373 U.S. at 383. Clearly, the standard posits the protection of clients' reasonable expectations as an important policy consideration. 70. See Merek & Guth, supra note 50, at 599 ("Inconsistent application by courts of the attorney-client privilege in cases involving patent agents impairs the interests of the intellectual property bar and, of course, the interests of clients who retain patent agents."). 71. See, e.g., Vernitron, 186 U.S.P.Q. (BNA) at (comparing the work of foreign and American patent agents). 72. See Krysten Crawford, Culture Vultures, The Recorder, Apr. 25, 1996 (describing trend among large firms to develop intellectual property practices). 73. See Kopacz, supra note 49, at 51 (characterizing the United States patent attorney as a "professional anomaly on the world scene").

14 1997] ATTORNEY-CLIENT PRIVILEGE 221 agents, Japanese benrishi (patent advisers) 7 ' are formally trained and authorized to provide legal advice regarding substantive legal matters such as patent invalidity and infringement, and may act as advocates in Japan Patent Office trials in appealing rejections and opposing patent applications. 7 " Despite the substantive nature of their work, however, American courts have consistently denied privilege to the communications of benrishi and their clients. The "farming out" of legal duties to non-lawyers results from the extremely narrow role that bengoshi (attorneys-at-law) play in the Japanese legal system. This, in turn, is a consequence of a system that severely restricts the population of lawyers. Only approximately Although some courts have referred to benrishi as "patent agents," see, e.g., Alpex Computer Corp. v. Nintendo Co., No. 86 Civ. 1749, 1992 U.S. Dist. LEXIS 3129, at *3 (S.D.N.Y. Mar. 9, 1992), the term is more often translated as "patent attorney." For example, "Benrishiho" is translated by the Code Translation Institute of Japan as "Patent Attorney Law." Benrishiho [Patent Attorney Law], translated in VI EHS Law Bulletin Series Japan No (1991). Also, the official English name of Benrishikai, the organization that all benrishi must join to practice, is "Japan Patent Attorneys' Association" ("JPAA"). Benrisbiho, art. 6; JPAA's Internet Home Page (visited Aug. 5, 1997) <http'// But see Donald M. Spero, The U.S. and Japanese Patent Systems: A User's Comparison, in Japanese Intellectual Property: The Japanese Patent System and Strategies of Competitiveness 103, (Japan Information Access Project ed., 1993) (translating benrishi as "patent clerk"); Michael K. Young, The Japanese Legal System: History & Structure, 2 Doing Business in Japan (Zentaro Kitagawa ed., 1996) (translating benrishi as "patent agent" and zeirishi as "tax agent"). Nevertheless, because the use of either "patent agent" or "patent attorney" is one of the sources of the confusion that is the subject of this Note, this Note refers to foreign legal practitioners by their foreign-language titles. Where translated, the Note refers to the more neutral terms, "patent advisers" and "tax advisers." 75. See Benrishiho, supra note 74, art Se4 e.g., Bayer AG v. Barr Labs., Inc., 33 U.S.P.Q.2d (BNA) 1655, 1660 (S.D.N.Y. 1994); Burroughs Wellcome Co. v. Barr Labs., Inc., 143 F.R.D. 611, (E.D.N.C. 1992); Alpex, 1992 U.S. Dist. LEXIS 3129, at *6-*7; Detection Sys., Inc. v. Pittway Corp., 96 F.R.D. 152, 156 (W.D.N.Y. 1982). This has led some commentators to recommend changes to Japan's privilege law. See Yoichiro Yamada, Beikoku no bengoshi kokyaku shuhi tokken seido ga maneku Nippon benrishi seido no kiki: Benrishiho kaisei no kinkyu teigen [The Danger to Japan's Patent Attorney System Brought by the United States' Attorney-Client Privilege System: An Urgent Recommendation to Revise the Patent Attorney Lawl, 47 Patento 22 (Mar. 1994). No such revision has occurred, however. In contrast, some United States courts have found German and French patent agent communications to be privileged, even though their patent advisory systems are not unlike that of Japan. See e.g., Golden Trade, S.r.L v. Lee Apparel Co., 143 F.R.D. 514, (S.D.N.Y. 1992) (Germany); Duplan Corp. v. Deerin Milliken, Inc., 397 F. Supp. 1146, 1170 (D.S.C. 1974) (France). Compare statutes discussed infra notes 113 (France) and 115 (Germany), with infra notes (Japan) The similarity of these Japanese statutes to their French and German counterparts is not accidental. Japanese laws were based on French and German models, and the Japanese Code of Civil Procedure "is a faithful imitation of the German Code." See Yosiyuki Noda, Introduction to Japanese Law 52-55,206 (Anthony t1 Angelo trans., 1976). This similarity makes the disparate treatment by American courts even more difficult to justify.

15 222 FORDHAM LAW REVIEW [Vol. 66 out of 35,000 applicants pass the annual bar exam." As a result, legal advice in certain areas of law-such as patent, tax, and general corporate representation-are provided by non-lawyer specialists. 78 Although benrishi are not lawyers, they are authorized to do everything that American patent agents can do and more. For example, under Japan's Patent Attorney Law, benrishi are authorized to advise clients on matters relating to not only patent prosecution, but also patent infringement and invalidity-both to assert patent rights, and to defend against claims. 79 Also, benrishi are the only non-lawyers in Japan who may represent clients at trial as supporting counsel for bengoshi. 80 To qualify as a benrishi, one must take an exam in five required subjects-patent law, utility model law, design patent law, trademark law, and treaties-and choose three optional subjects out of Of the subjects, eight are the same as those given in the standard Japanese bar examination-constitutional law, administrative law, civil law, commercial law, civil procedure law, criminal procedure law, international private law-and the remainder covers economics, marketing, and specific areas of science and engineering."' Those who pass this stage must then take an oral examination in industrial properties. 83 The exam, given once a year, has a pass rate of around 3% 4 (as compared to 2% for bengoshi 85 ). Perhaps as a consequence of the extremely rigorous qualification requirements, the number of benrishi in Japan is much smaller than the number of patent agents and patent attorneys in the U.S. The Japan Patent Attorneys' Association ("JPAA")-of which all practicing benrishi must be a member- 77. Japan admitted only 520 new lawyers in Donald L. Morgan and Shirley A. Chowdhary, Regulation of Foreign Law Firms: Slow Moves toward Liberalization, E. Asian Exec. Rep., May 15, 1996, at 8. Current proposals call for that number to be increased, but it is unclear when that may occur. Id.; see also Constance O'Keefe, Legal Education in Japan, 72 Or. L. Rev. 1009, 1012 (1993); J. Mark Ramseyer, Lawyers, Foreign Lawyers, and Lawyer-Substitutes: The Market for Regulation in Japan, 27 Harv. Int'l L.J. 499, 507 (1986). 78. See Letterman, supra note 15, at Benrishiho, supra note 74, art See Benrishiho, supra note 74, art. 9; Christopher E. Chaise, Glossary of Important Japanese Patent Terms, in Japanese Patent Practice: Prosecution/Litigation A- 1 (American Intellectual Property Law Association ed., 1992); Young, supra note 74, at See Benrishiho shikkorei [Patent Attorney Law Enforcement Ordinance], translated in VI EHS Law Bulletin Series Japan No (1991), art. 8; Benrishi shiken youkou [Patent Attorney Examination Outline] (visited Aug. 5, 1997) < Benrishiho shikkorei, supra note 81, art Id 84. Ramseyer, supra note 77, at Id at 507.

16 1997] ATTORNEY-CLIENT PRIVILEGE 223 claims 3,850 members, 8 6 while the USPTO had registered more than 18,000 names. 7 Benrishi are governed by virtually the same ethical rules regarding confidentiality as bengoshi. Confidentiality of communications is guaranteed in two statutes: Article 281 of the Civil Procedure Code and Article 22 of the Patent Attorney Law.8 9 The Civil Procedure Code provides attorneys and patent agents the right to refuse to testify. 90 The Patent Attorney Law provides for criminal sanctions where confidential information of the client is disclosed without the 86. See JPAA's Internet Home Page, supra note 74. Remarkably, this small group accounts for approximately one-third of the million or so patent documents published each year around the world. Patent Information from Japan (last modified July 18, 1997) < 87. The list of attorneys and patent agents registered with the USPTO is available at the United States Patent Office Home Page (last modified July 18, 1997) <httpj/ Mnsoho [Civil Procedure Code] (1889), translated in II EHS Law Bulletin Series Japan (1992), art The Civil Procedure Code was amended for the first time in more than 100 years through Law No. 109 of 1996 (expected to take effect January 1, 1998), in part to expand the traditionally limited scope of discovery. See generally Toshiaki Hasegawa, Shin minsoho: Bunsho kanri no yoten [The New Civil Procedure Code: Major Points in Document Management] 1-4. The new code, which has not yet been translated into English, does not deal specifically with attorney-client privilege. Id at Article 281, which remains substantially the same in Article 197 of the new code, id at 148, provides that a witness may refuse to testify-. In case a doctor, dentist, pharmacist, druggist, mid-wife, lawyer (including a foreign solicitor), patent attorney, advocate, notary public or an occupant of a post connected with religion or worship or a person who was once in such profession is questioned regarding the facts which came to his knowledge in the course of performance of his duties and which should be kept secret. Minsoho, art. 281(2). Japanese academics generally regard this law as providing the clearest expression of communication privileges under Japanese law. Se e.g., Hideyuki Kobayashi, Minji jiken ni okeru shoko no shushuw Soronteki kosatsu [Collection of Evidence in Civil Cases: General Observations], 46 Jiyu to Seigi 33,35 (Sep. 1995). One American court, however, has interpreted this rule as stopping short of a client's right to refuse to produce documents relating to communications with a patent attorney. Alpex Computer Corp. v. Nintendo Co., No. 86 Civ. 1749, 1992 U.S. Dist. LEXIS 3129, at *6 (S.D.N.Y. Mar. 9, 1992); see infra notes and accompanying text. 89. Benrishiho, supra note 74, art. 22. Article 22 provides: Any patent attorney or any person who was a patent attorney shall, in case he has, without due reasons, divulged, or made surreptitious use of the secrets of any person which may have come to his knowledge in the course of performance of his business, be punished with penal servitude for not exceeding six months or a fine not exceeding three thousand yen. Id. 90. See Minsoho, supra note 88, art. 281(2). It should be noted that under both the old and new Civil Procedure Code, parties in Japanese litigation are given broad latitude in withholding documents. See Hasegawa, supra note 88, at 22. Specifically, parties are permitted to withhold documents that are for personal use (such as notes or internal memoranda), concern technical or trade secrets, or contain information that members of certain professions-such as lawyers, patent advisers and doctorslearned in the course of their business. Id.

17 FORDHAM LAW REVIEW [Vol. 66 client's consent. 91 Thus, clients seeking patent-related legal advice in Japan are justified in expecting communications with benrishi to be protected from disclosure in the context of litigation or otherwise.' B. United Kingdom Patent representation in the United Kingdom is much more similar to the United States system, but differs significantly because it provides a statutory privilege for patent agents. In Britain, it is a criminal offense to use the title of "patent agent" without being on the official list of qualified practitioners, known as the Register of Patent Agents. 93 The Register is maintained by the Chartered Institute of Patent Agents ("CIPA"), which was granted a Royal Charter in To be registered, patent agents must spend several years in training and pass two sets of examinations. 95 Once admitted, patent agents must adhere to CIPA's Rules of Professional Conduct. 96 The Parliament created a statutory privilege for patent agents in 1968, which has since been repealed but remains in a different form in the Patents Act. 97 Generally, U.S. courts have given recognition to British patent agent privilege under the principle of comity See Benrishiho, supra note 74, art But see Spero, supra note 74, at Spero describes benrishi as clerks who do little more than translate and file papers, and encourages American corporations seeking patent protection in Japan to hire technically competent and bilingual bengoshi to prosecute the applications. Id As Spero himself admits, however, finding such a bengoshi is prohibitively difficult and expensive. I Moreover, his description of benrishi's responsibilities and abilities are unsubstantiated. 93. CIPA: The Chartered Institute of Patent Agents (last modified Jan. 16, 1997) < 94. Id 95. Id 96. Id 97. The Civil Evidence Act of 1968, 1968 ch. 64, 15(1). The provision was repealed by the Patents Act of 1977, 17 Halsbury's Statutes of England 187 (4th ed. 1993), and became section 104 of the Patents Act of ch. 37, 104. Section 104 of the Patents Act of 1977 was in turn repealed in the Copyright, Designs and Patents Act of 1988, 1988 ch. 48, 303(2), sched. 8. Under the current Patents Act, section 103 provides for an explicit privilege for communications with solicitors relating to patent proceedings, 33 Halsbury's Statutes of England 246 (4th ed. 1993), and section 102A, enacted in the Copyright, Designs and Patents Act of 1988, states that "[a] registered patent agent... may do, in or in connection with proceedings on an appeal under this Act from the comptroller to the Patents Court, anything which a solicitor of the Supreme Court might do, other than prepare a deed." Id at 245. Thus, despite the repeal of section 15 of the Civil Evidence Act, England continues to have a statutory patent agent privilege. See also 13 Halsbury's Laws of England (4th ed. 1975) 72 n.9, at See, e.g., Stryker Corp. v. Intermedics Orthopedics, Inc., 145 F.R.D. 298, (E.D.N.Y. 1992); In re Ampicillin Antitrust Litig., 81 F.R.D. 377, 391 (D.D.C. 1978). But see Duplan Corp. v. Deering Milliken, Inc., 397 F. Supp. 1146, (D.S.C. 1974) (denying privilege to communications predating the passage of the statute).

18 1997I] ATTORNEY-CLIENT PRIVILEGE 225 C. Europe The European Patent Office ("EPO") was established under the European Patent Convention in 1977 to provide a single source for patent protection in Europe. 9 There are currently eighteen contracting states: Austria, Belgium, Denmark, Finland, France, Germany, Greece, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Spain, Sweden, Switzerland, and the United Kingdom. 100 An applicant may file a patent application in the EPO in either English, French, or German and, once granted, the patent is valid in as many contracting countries as the applicant wishes to designate. 1 1 Patent representatives qualified to prosecute patent applications before the EPO are called European Patent Attorneys.yn2 To be eligible to take the European Patent Attorney qualifying examination, candidates must complete three years of supervised practical training in either a patent representative office or in a corporate patent department Furthermore, candidates must possess a technical or scientific qualification from an accredited institution.' 0 4 Provided that these threshold requirements are met, candidates must pass a fourpart examination. 05 Part A tests the candidate's ability to draft claims; part B requires the candidate to reply to a patent office action; part C involves the drafting of an opposition against a patent application; and part D requires candidates to make legal assessments of particular questions. 0 6 According to one study, the passage rate fluctuates between 36% and 66% Upon passing the examination, a candidate must request that his or her name be included on the List of Professional Representatives.les By registering, the candidate becomes a member of the Institute of Professional Representatives before the EPO ("EPI"), and is qualified to practice before the EPO. As a member, a European Patent 99. See Introduction to Intellectual Property and Practice 511 (World ntellectual Property Organization ed., 1997); How to Become a European Patent Attorney (visited Aug. 5, 1997) file downloaded from <http'/ How to Become a European Patent Attorney, supra note Introduction to Intellectual Property and Practice, supra note 99, at How to Become a European Patent Attorney, supra note Id Id 105. Id. This requirement is waived for patent agents who were already registered in one of the contracting states at the time that the state joined the EPO system. See Kopacz, supra note 49, at 50. Most practicing European patent attorneys were admitted through this "grandfather clause" and, as of 1987, only 4% had taken the examination. Id. at How to Become a European Patent Attorney, supra note 99. But see Kopacz, supra note 49, at 51 ("[Vlirtually all patent attorneys in Europe have only a technical or scientific background and, with rare exceptions, have no legal training and are not members of the bar.") Kopacz, supra note 49, at How to Become a European Patent Attorney, supra note 99.

19 226 FORDHAM LAW REVIEW [Vol. 66 Attorney is subject to EPI's disciplinary rules, including Article 2 on professional secrecy. 1 9 The rule provides: "A professional representative shall be bound not to disclose information accepted by him in confidence in the exercise of his duties, unless he is released from this obligation."" 0 In cases where privilege issues have arisen in relation to European Patent Attorneys, however, U.S. courts have turned to the privilege law of the patent attorney's country of practice rather than the European standard."' Courts examining the privilege law of individual European countries generally tend to find that privilege laws cover patent agents in their respective countries. For example, in Duplan Corp. v. Deering Milliken, Inc.," 2 the court recognized privilege for communications with a French patent agent based on a provision in the French Penal Code." 3 Similarly, in Golden Trade, S.r.L. v. Lee Apparel Co.,"' the court extended attorney-client privilege to German patent agents based on an affidavit by a German patent attorney stating that patent attorneys may appear in court but only with an attorney-at-law, and that German law prohibits patent attorneys from disclosing communications with clients." Regulation on Discipline for Professional Representatives, art. 2 (1973) (visited Aug. 5, 1997) file downloaded from <http'// Id See, e.g., Stryker Corp. v. Intermedics Orthopedics, Inc., 145 F.R.D. 298, (E.D.N.Y. 1992) (analyzing British law for communication concerning a European patent application) F. Supp (D.S.C. 1974) Id. at The court pointed to Article 378 of the French Penal Code, which reads: Doctors, surgeons and other health officers, as well as chemists, midwives and all other persons who are depositories, by their condition or profession or by temporary or permanent duties, of secrets which are entrusted to them, who, except in cases where the law obliges or authorizes them to be informers, shall have revealed such secrets, shall be punished by imprisonment of one month to six months and by a fine of 500 to 3,000 francs. Id. (alteration in published opinion omitted) F.R.D. 514 (S.D.N.Y. 1992) Id. at 524. The court cited to various German statutes, including section 203 of the Penal Code, section 24 of the Guidelines for the Practicing of the Patent Attorney Profession, and sections 53 (misprinted in the published opinion as " 383") and 97 of the Criminal Procedure Code. Id. at 524 n.6. Penal Code section 203(3), governing violations of privacy, provides that certain professionals including patent attorneys who "without authorization, reveals another's secret... shall be punished by up to one year's imprisonment or by fine." 203(1) Nr.3 Strafgesetzbuch [StGB], translated in The Penal Code of the Federal Republic of Germany (Joseph J. Darby trans., 1987). Under section 53 of the Criminal Procedure Code, "attorneys-at-law, patent attorneys, notaries, sworn accountants, sworn auditors, tax advisers and authorized tax agents, physicians, dentists, pharmacists, and midwives, as regards whatever has been confided or became known to them in this capacity" may refuse to testify. 53 Nr.I(3) Strafprozegordnung [StPO], translated in The German Code of Criminal Procedure (Horst Niebler trans., 1965). Section 97 excludes from seizure "written communications between the accused and persons who may refuse testimony pursuant to... 53" as well as "notes, made by persons specified in concerning informa-

20 1997] ATTORNEY-CLIENT PRIVILEGE i'. APPLICATION OF THE ATrORNEY-CLIENT PRIVILEGE TO FOREIGN LEGAL PROFESSIONALS In most of the reported cases, privilege becomes an issue when an accused patent infringer seeks discovery of communications concerning foreign patent applications that correspond to the patent-in-suit.' 1 6 The plaintiff is sometimes the accused infringer, moving to invalidate or limit the claims of the patent at issue.'" 7 An accused infringer hopes that such communications include admissions, or statements showing inequitable conduct, fraud on the patent office, or bad faith." 1 8 A party seeking a patent may have confided to a foreign patent representative its concern that the claims of its American patent were overbroad and unlikely to be granted in other countries. A party may have revealed that it discovered potentially invalidating prior art." 9 Less common are cases where a plaintiff patent-holder demands disclosure of communications between the accused infringer and a foreign patent attorney.' This may occur when, for example, a foreign defendant seeks advice from its long-time, local patent counsel upon learning of the patent-in-suit or a corresponding patent application."l In any of the scenarios described above, the nature and the substance of the communication go beyond the mere processing of patent applications and indicate that the parties assumed that a privilege existed.' 2 tion confided to them by the accused, or concerning other circumstances to which their right to refuse testimony pertains." 97 Nr. I(1)-(2) StPO See, e.g., Golden Trade, 143 F.RID. at 517. To obtain protection worldwide, an inventor cannot just file a patent application in only one country, but must file in patent offices around the world. Schwartz, supra note 4, at The first application to be filed is called the "priority application," and most countries require that the corresponding application be filed within one year of the date on which the priority application was filed. Id This may occur, for example, in the context of an antitrust suit between patent licensees and their licenser. See, e.g., In re Ampicillin Antitrust Litig., 81 F.R.D. 377 (D.D.C. 1978). A party threatened with a potential infringement claim may seek a declaratory judgment from a court that a patent is invalid, unenforceable, or not infringed. Schwartz, supra note 4, at Such arguments, if proven, could defeat the patentholder's liability claims by rendering the entire patent unenforceable. Schwartz, supra note 4, at "Prior art" refers to publicly disclosed material predating the claimed invention. Id. at See, e.g., Alpex Computer Corp. v. Nintendo Co., No. 86 Civ. 1749, 1992 U.S. Dist. LEXIS 3129 (S.D.N.Y. Mar. 9, 1992) Foreign patent offices publish pending patent applications prior to examination, in contrast to the United States where the contents of a patent application remain secret until granting. See Paul A. Ragusa, Note, Eighteen Months to Publication: Should the United States Join Europe and Japan by Promptly Publishing Patent Applications?, 26 Geo. Wash. J. Int'l L. & Econ. 143, (1992). As a consequence, foreign patent applications based on an American priority application are often published before the American patent issues. Id. Thus, a party could learn of its competitors' newest inventions long before their patents issue. Id Restatement (Second) Conflict of Laws 139(2) cmt. at 388 ("[T]he fact that the communication was of a sort treated in strict confidence... was presumably a